Ex Parte Shah et alDownload PDFPatent Trial and Appeal BoardJan 29, 201612322842 (P.T.A.B. Jan. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/322,842 0210612009 123665 7590 02/02/2016 Bell & Manning, LLC and Northwestern University 2801 W. Beltline Hwy., Ste. 210 Madison, WI 53713 FIRST NAMED INVENTOR Surendra P. Shah UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 00100-0018 5858 EXAMINER MAR CANTONI, PAUL D ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 02/02/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@bellmanning.com mmanning@bellmanning.com pporembski@bellmanning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SURENDRA P. SHAH, MARIA S. KONSTA-GDOUTOS, and ZOI S. METAXA Appeal2014-004470 Application 12/322,8421 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 1, 3-10, 12, 16, 37, 38, and 41--48 under 35 1 According to Appellants, the real party in interest is Northwestern University. App. Br. 2. Appeal2014-004470 Application 12/322,842 U.S.C. § 102(b) as anticipated by Veedu or, in the alternative, under 35 U.S.C. § 103(a)2 as obvious over Veedu3 alone or in view of Berke.4 We have jurisdiction under 35 U.S.C. § 6(b). 5 We REVERSE. The subject matter on appeal is directed to methods of making a nanocomposite cementitious material (see, e.g., claims 1 and 9). Appellants disclose that cementitious materials typically have low tensile strength and low strain capacity. Spec. p. 1, 11. 17-18. Fibers may be incorporated into cementitious material to compensate. Spec. p. 1, 11. 18-19. Appellants disclose microfiber reinforcement has led to the significant improvement of the mechanical properties of cementitious materials, including delays in the development of microcracks, but microfibers do not stop the initiation of microcracks. Spec. p. 1, 1. 21 to p. 2, 1. 3. Appellants disclose that the incorporation of nanoscale fibers allows the control of matrix cracks at the nanoscale in cementitious materials. Spec. p. 2, 11. 4---6. Appellants disclose problems associated with the incorporation of carbon nanotubes in cementitious materials due to the poor dispersion of carbon nanotubes and the cost of carbon nanotubes. Spec. p. 3, 11. 1-9. Appellants disclose cementitious materials that address these problems by providing improved 2 In the Final Office Action dated Feb. 25, 2013, claims 1, 9, and 41--48 were rejected under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 132 because the specification did not support the claims, and claim 1 was rejected under 35 U.S.C. § 112, second paragraph, as indefinite. These rejections were withdrawn by the Examiner. Ans. 4. 3 Veedu, US 7,666,327 Bl, issued Feb. 23, 2010. 4 Berke et al., US 6,358,310 Bl, issued Mar. 19, 2002. 5 Our decision refers to Appellants' Appeal Brief filed September 13, 2013 (Appeal Br.), the Examiner's Answer mailed October 23, 2013 (Ans.), and Appellants' Reply Brief filed November 25, 2013 (Reply. Br). 2 Appeal2014-004470 Application 12/322,842 dispersions of small amounts of carbon nanotubes in cement based materials. Spec. p. 4, 11. 2--4. Claim 1 is illustrative of the claims on appeal and is reproduced below from the Claims Appendix of the Appeal Brief. 6 The limitations at issue are italicized. 1. A method of making a nanocomposite cementitious material, comprising sonicating an aqueous solution containing surfactant and carbon nanotubes to form a dispersion of carbon nanotubes in the solution, and mixing the dispersion of carbon nanotubes and a cement to form a nanocomposite cementitious material wherein the carbon nanotubes are present in an amount of about 0.048% to about 0.08% by weight of the cement and further wherein the nanocomposite cementitious material exhibits a modified nanostructure so that the average values of stiffness and hardness of C-S-H, as determined by nanoindentation tests, are higher compared to the same cementitious material without carbon nanotubes. B. DISCUSSION The dispositive issue on appeal is: Has the Examiner demonstrated that Veedu anticipates a method of making a nanocomposite cementitious material in which an aqueous solution containing surfactant and carbon nanotubes is sonicated, as recited in claims 1 and 9, or shown that Veedu, either alone or in combination with Berke, renders such a method obvious. The Examiner finds Veedu discloses a method of making a cement composite comprising carbon nanotubes. Ans. 2. The Examiner finds Veedu discloses sonication of a dispersion including carbon nanotubes in an amount of 0.00001 to 90% by weight. Ans. 2. 6 Appeal Br. 32. 3 Appeal2014-004470 Application 12/322,842 Appellants contend Veedu does not disclose sonicating an aqueous solution containing surfactant and carbon nanotubes because Veedu discloses sonicating an organic solvent including carbon nanotubes. Appeal Br. 10-11. Appellants' arguments are persuasive of reversible error. "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant. Id. Here, the Examiner has not met the initial burden of presenting a prima facie case ofunpatentability. The Examiner finds Veedu discloses a preference for an organic solvent, such as acetone or an alcohol and "never states that water may not be used as a solvent." Ans. 6. "To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." In re Schreiber, 128 F .3d 1473, 1477 (Fed. Cir. 1997). Significantly, Veedu's silence is not an express description, within the meaning of 35 U.S.C. § 102(b), of"sonicating an aqueous solution containing surfactant and carbon nanotubes" as recited in claims 1 and 9. Appeal Br. 32-33. Moreover, the Examiner has not provided a sufficient factual basis to support a finding of inherency. As for obviousness, the Examiner likewise has failed to provide a sufficient factual basis to support a conclusion of obviousness. See Ans. 2--4. Veedu discloses that a good dispersion of the carbon nanotubes is critically important for achieving desired properties for nanotube reinforced materials. Veedu col. 1, 11. 64---67. However, Veedu recognizes the difficulty of dispersing carbon nanotubes in aqueous environments, where carbon nanotubes tend to aggregate. Veedu col. 4 Appeal2014-004470 Application 12/322,842 1, 11. 60-64. Thus, in the absence of any guidance provided by Appellants' disclosure, there would have been no reason to sonicate an aqueous solution containing surfactant and carbon nanotubes as recited in the claims on appeal. See Appeal Br. 22-23. The Examiner relies on Berke as disclosing the use of superplasticizer, particularly polycarboxylate, in cement compositions. Ans. 3. The Examiner concludes it would have been obvious to use polycarboxylate in the composite of Veedu. Ans. 3. Therefore, the Examiner's reliance on Berke does not cure the deficiencies of Veedu discussed above. For these reasons, the rejection of claims 1, 3-10, 12, 16, 37, 38, and 41--48 under 35 U.S.C. § 102(b) as anticipated by Veedu or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Veedu alone or in view of Berke is not sustained. C. DECISION The decision of the Examiner is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation